22728

 

            Under the current statutory scheme, patents are presumed valid (Panduit, §282), but our inquiry cannot end there.  We can probably assume that the AI will assert invalidity as a defense to their infringement. 

 

1. Therefore, our first question set would relate to B s device in the magazine.

 

§102(a)

 

We want to look carefully the description of the product in B s ad in M magazine in Scotland.  This is because 102(a) invalidates patents where the invention was patented or described in a printed publication (even in foreign countries) before invention by our client.  We would want to find out the first date of publication of the ad, and also any dates related to the issue of B s patent, if B has a patent.  If B s product was either 1) patented in Scotland (or any other country), or sufficiently described in M, then our patent is invalid.  Here, the critical date is our date of invention, so it will be important to know that date.  We essentially want to ask: Did B obtain a patent (anywhere in the world) before our date of invention, or did B describe the device in a printed publication (anywhere) before our date of invention? If the answer to either question is yes, then our claims read on the prior art and are invalidated.

For example, let s assume B patented their device in 1996, and the device is essentially the same and has the same specifications.  If our date of invention was in 1995, then our claim does not read on B s prior art.  If the date of our invention was 1997, then our claims read on B s prior art, and our patent is invalid.  If B patented the device before 1996, then our client must have invented the device before that patent to escape invalidation.  

 

2. Our second question set would relate to the PO s activity prior to the patent application date.

 

§102(b)

 

            Because the PO filed in 1998, we need to ask what the PO did before 1997.  We should ask the PO if he offered to sell this device before 1997, or whether it was used at all before that date.  If it was used, we should ask questions which help us determine whether the use was experimental, (e.g. Name everyone who saw or used the device?, Were only scientists allowed to work with the device?, etc.) and if so, whether the experimental use was controlled.  §102(b), also known as the on-sale bar, controls our inquiries here.  

 

On sale bar

If the patented invention was both the subject of a commercial offer for sale and ready for patenting prior to the critical date, then the on-sale bar applies and our patent is invalid.  (Pfaff v. Wells).  Thus, if PO offered to sell the invention before 1997, and it was ready for patenting, then our patent is invalid.

 

Public use

            We must also inquire into the nature of the use of this device before 1997, if any.  If there was any use, was it experimental?  The experimentation must relate primarily to the perfection of the device, and not be incidental to the experimentation.  In re Smith suggests that if the experimentation has to do with consumer approval or popularity, it will be considered public use and declared invalid.  Thus the experimentation must have to do with the perfection of the device.  The question of whether the use is experimental or public is one of law. (City of Elizabeth v. American Nicholson Pavement Co.)  If the use is experimental, even if public, the patent remains valid.

 

If the use is not experimental, it still may not be public.  The proponent of the publication bar must show that prior to the critical date the reference was sufficiently accessible, at least to the public interested in the art, so that such a one by examining the reference could make the claimed invention without further research or experimentation. (In re Donohue)

 

§102(g)

We should also ask when the PO s device was conceived and reduced to practice.  If the PO was the first to reduce the device to practice, then we are in the clear under §102(g).  If not, we should ask questions which can help us establish that our client was diligent (Did you keep a daily log of your activity?,  How many hours a week did you work on the reduction to practice for this device?, etc.)

 

            3. Our third question set would relate to the nature of the K patent and B patent, if B has a patent.

 

            We would want to ask questions like What are the differences between our device and K s and B s devices?  What are the differences in the function and design, if any?  Do all the devices do exactly the same thing, or do they do slightly different things?  Under §103, it is important to know whether a person having ordinary skill in the art would find our claim obvious.  Questions which would help us determine this include: how successful was your device commercially? and did others try and fail to come up with a sufficiently functional design? and did your invention fill a long unsolved need?   This is because the Federal Circuit has determined that these questions are dispositive of whether or not the device was nonobvious. (Gore, Graham v. Deere).  The POSITA must be a person who would have found the claim non-obvious at the time when the device was made one cannot employ hindsight in the determination of obviousness. (Panduit).